Court of Appeal of Düsseldorf, Decision of 23 February 2012, No. I-2 U 134/10, "Run-Flat-Device"
The Court of Appeal of Düsseldorf set out the conditions under which the handing out of brochures at foreign trade fairs may constitute a patent infringement under German patent law. This was the case, if it had a sufficient connection to Germany.
The principle of territoriality in patent law states that the effects of a patent are strictly limited to the territory for which the patent is granted. As a consequence, use outside that territory cannot constitute patent infringement.
However, the Court of Appeal of Dusseldorf stated that the handing out of brochures at a foreign, international trade fair might constitute patent infringement in Germany if there was a sufficient connection to the territorial scope of the German patent.
In the case at hand, the defendants handed out brochures which depicted two alleged embodiments of the plaintiff's patent at an international trade fair in London. The plaintiff argued that there was a sufficient connection to Germany as there were German industry professionals among the visitors of the trade fair.
The court of first instance dismissed the claim, stating that the handing out of brochures on a trade fair in London may, at most, be considered a non-infringing preparatory measure.
The Court of Appeal of Dusseldorf confirmed this decision, holding that the plaintiff failed to demonstrate a patent infringing use in Germany. However, the court set out the conditions under which the distribution of brochures abroad might constitute an infringing offer according to Article 9 No. 2 of the German Patent Act.
The court said that an offer infringed a German patent if either the place of the origin of the offer or the place of the recipient of the offer was in Germany.
With regard to the claimed infringement by handing out brochures, the place of origin was at the trade fair in London.
The court held that the place of the recipient might be located in Germany if a (German) visitor of the fair reported this offer to a German company - either as a messenger of the exhibiting company or as a representative of the German company to which the offer is directed.
In the case of a messenger, the place of the recipient would be the seat of the company to which the offer was directed. In the case of the representative, the place of the recipient would, in general, be the place where the representative receives the offer, i.e. usually the place of the trade fair. However, if the representative was not authorized to decide about the offer without consulting his principal, the court held that an additional place of the recipient would be the seat of the principal. This would only be the case, though, if the offering company was aware of an external decision-maker and could therefore react to the disadvantage of a second place of the recipient, e.g. by redesigning the brochure in order to exclude certain countries from being targeted by the offer.
The court stated that the plaintiff needed to demonstrate indications that the offer was "received" in Germany, i.e. that there was at least one German visitor of the trade fair at the defendant's exhibition stand who reported the offer to a company in Germany. It was not sufficient to state that there were German industry professionals among the visitors of the trade fair.
Before this decision, the general view in German case law and literature was that an advertisement abroad for embodiments marketed abroad cannot constitute a patent infringement in Germany. However, the decision does not contradict this view. The court only indicated that an offer abroad was not lawful per se but may constitute a patent infringement if there was a sufficient connection to Germany.
The decision increases the options to litigate before a court in Germany if a plaintiff is able to demonstrate that the place of the recipient is in Germany. It also gives an incentive for exhibitors at trade fairs to design their brochures in a way which excludes offers and deliveries to countries which are not meant to be targeted.